University Technology Transfer:Issues and Opportunities

Mark Crowell

Research Administration for Scientists (T. Quigg)

7 December 2001

GOALS OF OTD

• Manage UNC’s intellectual property assets; • Protect and serve rights and interests of university and

its faculty; • Facilitate the passage of research innovations into the

marketplace for the public good; • Generate a growing source of funds to support the

university, its faculty and the research enterprise; and• Connect the university to economic development.

POLICY FRAMEWORK Bayh-Dole Act (1980)

UNC Patent and Copyright Policy

UNC-CH Patent and Copyright Procedures

UNC System Conflict of Interest / Commitment Policy

IRS and related regulations

OTD Services / Programs

• On-line invention reporting and marketing system• Invention Evaluation• Manage Patenting Process• Invention Marketing and Licensing• Research Support and Funding (Resource

Development)• Business Development (Start-Up Companies)• Economic Development

Current OTD Deal Flow

• 120+ invention reports per year• ~$1.4 M in invention revenue• 69 license agreements• Royalties shared w/ inventors (40%) and

departments (40%) (OTD gets 20%)• 12 start-up companies in 2000-2001

OTD Licensing Strategies

• Market to / partner with existing companies• Typically convey patent rights in return for

research support, royalties, patent costs, etc.• Diligence, field of use, related terms ensure

maximum technology deployment• Effective way to build partnerships, transfer

technology - will always be bread and butter

New Directions: Start-Ups / Faculty Entrepreneurs

• License remains tech transfer mechanism• University / faculty entrepreneur create new

company to commercialize technology• Equity provided to university & inventor(s)• Faculty often involved as consultants/advisors• OTD helps develop business plan, locate

venture capital, recruit management, find space, etc., etc.

Start-Ups: Advantages

• Build/maintain value for IP; can ensure maximum technology development

• Enhances faculty & student recruitment/ retention/ satisfaction

• Builds new wealth among university friends• Promotes job creation, economic development,

expanded tax base• Aggressively pursue other university objectives

ETHICAL / CONFLICT ISSUES

Designating inventorship (vs. authorship) -- (protection of grad students / junior faculty; protection of patent)

Ownership of inventions / data (So. Fla. case) Freedom to publish following reasonable delay (UCSF

synthroid case) Sharing of research materials (materials transfer agreement

articles) Patenting / marketing / use of genetic material (article on

ownership of material) Conflict of interest for faculty entrepreneurs Insider trading concerns (Columbia prof., Wayne St. prof.)